Michael ItagakiDownload PDFPatent Trials and Appeals BoardFeb 2, 20212020003968 (P.T.A.B. Feb. 2, 2021) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 15/449,629 03/03/2017 Michael Itagaki EMBO-1-001.1 1092 122997 7590 02/02/2021 BEB Clients/Branch Partners 600 University Street, Suite 620 Seattle, WA 98101 EXAMINER BALDORI, JOSEPH B ART UNIT PAPER NUMBER 3711 NOTIFICATION DATE DELIVERY MODE 02/02/2021 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): patentdocketing@branchpartners.law PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL ITAGAKI Appeal 2020-003968 Application 15/449,629 Technology Center 3700 Before JILL D. HILL, LEE L. STEPINA, and ARTHUR M. PESLAK, Administrative Patent Judges. PESLAK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–12.2 See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as the inventor, Michael Itagaki. Appeal Br. 2. 2 Claims 13–20 are withdrawn from consideration. See Final Act. 1. Appeal 2020-003968 Application 15/449,629 2 THE CLAIMED SUBJECT MATTER Appellant’s invention relates to a magnetic connector for use with anatomic models. Sole independent claim 1, reproduced below, is representative of the claimed subject matter: 1. An anatomic model, comprising: a first part with a first connector element disposed at one end of the first part, the first connector element comprising at least one tooth, at least one indented region, and a plurality of magnets disposed within the tooth or adjacent the indented region; and a second part with a second connector element disposed at one end of the second part, the second connector element comprising at least one tooth, at least one indented region, and a plurality of magnets disposed within the tooth or adjacent the indented region, wherein the at least one indented region of the second connector element is configured and arranged to receive the at least one tooth of the first connector element and the at least one indented region of the first connector element is configured and arranged to receive the at least one tooth of the second connector element to interlock the first and second connector elements, and wherein the magnets of the first and second connector elements are arranged to hold the first and second connector elements together when interlocked until manually released. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Varner US 7,144,179 B2 Dec. 5, 2006 Sakezles US 7,427,199 B2 Sept. 23, 2008 Levine US 9,795,406 B2 Oct. 24, 2017 Appeal 2020-003968 Application 15/449,629 3 REJECTIONS 1. Claims 1–9 are rejected under 35 U.S.C. § 103 as unpatentable over Sakezles and Levine. 2. Claims 10–12 are rejected under 35 U.S.C. § 103 as unpatentable over Sakezles, Levine, and Varner. ANALYSIS Rejection 1 The Examiner finds that Sakezles discloses many of the limitations of the anatomic model of claim 1, including two connector elements connected by magnets, but does not disclose an interlocking tooth and indent connection on the connector elements. Final Act. 2–3. The Examiner finds that Levine discloses a tooth and indent connection and considers that it would have been obvious to have provided the device of Sakezles with a toothed connection to provide better alignment between the connections, as well as making the connection more reliable, making the device easier to use, and more attractive to users. Id. at 4–5. According to the Examiner, although both Sakezles and Levine have a single magnet per connection, using plural magnets is mere duplication of parts. Id. at 5 (citing In re Harza, 274 F.2d 669 (CCPA 1960)). Analogous Art Appellant argues that Levine is non-analogous art. Appeal Br. 4; see also Reply Br. 6. In particular, Appellant asserts that Levine is not in the same field as Appellant’s invention because Levine is directed to a thrombectomy wire, which is a medical device used in medical procedures, whereas the claims are directed to an anatomical model, which is not a medical device or used during a medical procedure. Appeal Br. 6; see also Appeal 2020-003968 Application 15/449,629 4 Reply Br. 6. Appellant further asserts that Levine does not relate to any problem addressed by the invention. Appeal Br. 6. We are not persuaded of Examiner error for the following reasons. Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). We do not agree with the Examiner’s assertion that Levine is directed to a connector in the medical field and, thus, in the same field of invention as Appellant’s claimed invention. Ans. 8. We are, however, persuaded that Levine is reasonably pertinent to a particular problem with which the inventor was concerned. Id. at 9. Levine is directed to a rotational thrombectomy wire (Levine, 1:18–19) that is connected to a motor to rotate the wire. See Levine, 2:45–48. Levine is pertinent to a need identified by Appellant of a device that can “be deployed or retrieved easily.” Spec., 2:1–2. Appellant describes its solution to this problem by using a toothed, magnetic connector to “create a better connection by guiding the two parts together as their proximity closes,” and that “ensures that the two parts are aligned and oriented correctly as they are mated.” Spec., 7:10–21. Levine discloses that female coupler 520 has a plurality of recesses 528 that receive projections or prongs 518 of male coupler 510 and that “[p]rojections 518 can have an angled end 518a to provide a lead in for coupling to the female connector 520.” Levine, 12:64–13:1; see also Final Act. 4–5. Thus, Levine relates to a problem addressed by the invention by describing a device that can be deployed easily by using a toothed, magnetic Appeal 2020-003968 Application 15/449,629 5 connector to guide the two parts together so that the parts are aligned and oriented correctly as they are mated. One of ordinary skill in the art looking to guide and align two parts would not have sought a solution to this problem by looking only to anatomical models. Rather, a medical device used in tight, twisting areas such as disclosed in Levine would have been reasonably pertinent to the problem facing Appellant. Because Levine is reasonably pertinent to Appellant’s problem, we agree with the Examiner that Levine is analogous art. Reasoning in References Appellant argues that there is no reason or motivation to combine the references as asserted in the Final Office Action because the alleged reasons to combine the references are not disclosed by Sakezles or Levine. Appeal Br. 7. We are not persuaded by this argument for the following reasons. Appellant’s argument is apparently based on the rigid TSM standard. But, the TSM a standard is no longer required. Although the requirement of demonstrating a teaching, suggestion, or motivation (the TSM test established by the Court of Customs and Patent Appeals) to combine known elements in order to show that the combination is obvious may be “a helpful insight,” it is not a mandatory formula. KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418–419 (2007). Here, the Examiner’s rationale for the modification is to provide a better alignment between the connections, making the connection more reliable, making the device easier to use, and more attractive to the users. See Final Act. 4–5 (citing Levine, 12:64–13:1). We find the Examiner’s reasoning to be sufficient and supported by the disclosure of Levine. Specifically, we agree with the Examiner that Levine’s disclosure of a “lead in” improves the alignment of the Appeal 2020-003968 Application 15/449,629 6 connections, which is bolstered by the Examiner’s assertion, not disputed by Appellant, that it is generally known in the art that a toothed connection makes the connection more reliable, makes the device easier to use, and more attractive to users. Ans. 10–11. No Motivation to Modify Sakezles After quoting the heading for MPEP § 2141.02 which relates to references that teach away from the claimed invention, Appellant argues that because Levine’s coupler is attached to a motor, and because Sakezles does not use a motor, a skilled artisan would not have been motivated to modify Sakezles based on Levine. Appeal Br. 8; see also Reply Br. 8. For the following reasons we are not persuaded by Appellant’s argument. The Examiner proposes to add teeth (separated by recesses) to the end part of the connectors as seen in Figure 18 of Levine. Levine discloses that using a toothed connection provides a lead in, which improves alignment. Levine, 12:64–13:1. Appellant does not dispute this teaching by Levine or the Examiner’s finding that a toothed connection is known to make the connection more reliable, make the device easier to use, and more attractive to users. The fact that Levine may be solving different problems does not obviate the Examiner’s rationale for the determination of obviousness. See KSR 550 U.S. at 417 (“When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.”). Hindsight Appellant argues that the only teaching of an improved connection is provided by Appellant’s disclosure and that the Examiner uses the disclosure Appeal 2020-003968 Application 15/449,629 7 to improperly provide a roadmap for combining the references. Appeal Br. 9. According to Appellant, Levine’s teaching of a toothed design is to prevent the connectors from slipping during rotation, which is not pertinent to the anatomic model of Sakezles. Reply Br. 10. Appellant’s argument is not persuasive. Although Levine uses a toothed connection to prevent slipping during rotation, Levine also uses a toothed connection for aligning the connectors prior to coupling. Levine, 12:64–13:1; see also Ans. 10–11. Appellants’ argument that the Examiner relied on improper hindsight is, thus, not persuasive because the Examiner has stated a rationale for the modification of Sakezles that we determine is adequately supported by sufficient facts. See In re Cree, 818 F.3d 694, 702, n.3 (Fed. Cir. 2016). Plural Magnets Appellant argues that claim 1 requires plural magnets for each connector element that are within a tooth or adjacent an indented region, whereas Sakezles and Levine both disclose a single magnet in each coupler that are not disposed as recited. Appeal Br. 10. Appellant’s argument is not persuasive for the following reasons. As the Examiner correctly finds, Levine teaches a first magnet 524 adjacent to indented region 528 and within toothed area 529, as well as a second magnet 514 adjacent to an indented region. Ans. 11–12; see also Levine, Fig. 18. As to the claimed plurality of teeth, we agree with the Examiner that this is a mere duplication of parts. See Ans. 12 (citing In re Harza, 274 F. 2d 669 (CCPA 1960)). The Harza Court found that “[i]t is well settled that the mere duplication of parts has no patentable significance unless a new and unexpected result is produced.” Harza, 274 F.2d at 671. Appeal 2020-003968 Application 15/449,629 8 Appellant does not direct us to any evidence in the record or provide persuasive argument that placing a plurality of magnets within the tooth or adjacent the indented region as recited in claim 1, results in new or unexpected results. In particular, dividing Levine’s circular magnet 524 into two semicircular magnets or into four quadrants that correspond to the four ribs (teeth) 529 of Levine would provide the same magnetic coupling to Levine’s magnet 514, which also could be similarly divided. Summary We have considered each of Appellant’s arguments, but we are not apprised of error in the Examiner’s factual findings or reasoning for the rejection of claim 1. Accordingly, we sustain the rejection of claim 1. Appellant does not argue separately for the patentability of dependent claims 2 and 5–9 which therefore fall with claim 1. Claims 3 and 4 Appellant argues that magnets 524, 514 of Figures 18 and 20 of Levine are not “disposed in a tooth, as recited in claim 3.” Appeal Br. 11. Appellant, thus, argues that claim 3, as well as claim 4 which depends therefrom, is patentable over the cited references. Id. Appellant makes a similar assertion against claim 1 that is impermissibly raised for the first time in the Reply Brief. See Reply Br. 13. Appellant’s argument, whether applied to claim 1 or claim 3, is not persuasive for the following reasons. Appellant’s Specification discloses that “connector 100 makes use of interlocking teeth 108 and indented regions 110 that can be gear-like in design” to form an interlocking connection. Spec. 7:10–12. We reproduce below Appellant’s Figure 1, which depicts connector 100. Appeal 2020-003968 Application 15/449,629 9 Figure 1 is a schematic side view of two connector elements of a connector. Spec. 4:20–21. Levine discloses a similar interlocking connection having a plurality of recesses 528 separated by ribs 529 having magnet 524 “positioned within” ribs 529 (Levine, 12:62), and which recesses 528 receive projections or prongs 518 to form a coupling as seen in Figure 18, reproduced below. Appeal 2020-003968 Application 15/449,629 10 Figure 18 is a perspective view of an alternate embodiment of the coupler for coupling the thrombectomy wire to the motor. Levine, 6:16–18. The coupling of Figure 18 is disclosed as an alternative to Levine’s “teeth 437, 457” that allow slipping (Levine, 12:40–42), and are depicted in Figure 15, reproduced below. Appeal 2020-003968 Application 15/449,629 11 Figure 15 is a perspective view of an alternate embodiment of the coupler for coupling the thrombectomy wire to the motor. Levine, 6:8–10. Based on the disclosure of Levine, we understand Levine’s recess/prong/rib connection to be a toothed connection, but having deeper recesses to form a more robust connection than the teeth that allow slipping. The result of the Examiner’s determination that duplication of parts has no patentable significance (Ans. 12) is the single magnet 524 is duplicated and the multiple magnets of the first connector element will be disposed within teeth of the first connector element. Accordingly, we sustain the rejection of claims 3 and 4. Rejection II, Obviousness Claims 10–12 Claims 10–12 depend from claim 1. Appeal Br. 13 (Claims App.). Appellant does not argue separately for the patentability of claims 10–12 other than to state that “Varner does not address any of the deficiencies of Levine and Sakezles.” Appeal Br. 11. We sustain the rejection of claims 10–12 for the same reasons discussed above. CONCLUSION The Examiner’s rejections are affirmed. More specifically, Appeal 2020-003968 Application 15/449,629 12 DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–9 103 Sakezles, Levine 1–9 10–12 103 Sakezles, Levine 10–12 Overall Outcome TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation